TTAB Deems TALKIE Confusable with TALKIE.AI & Design for Chatbot Software, Rejecting Crowded Field Argument

The Board affirmed a refusal to register the mark TALKIE for, inter alia, "downloadable computer chatbot software for simulating conversations in the field of entertainment, education, creative writing, role-playing, and personal companionship," concluding that confusion is likely with the registered mark shown below, for, inter alia, "downloadable computer chatbot and bot software for simulating conversation." Applicant Subsup pointed to the four other registrations cited in the final refusal, but the Board found them insufficient to show a "crowded field" of TALKIE-formative marks. In re Subsup Pte. Ltd., Serial No. 98680779 (October 19, 2026) [not precedential] (Opinion by Judge Christopher C. Larkin).

Subsup argued that the entire identification of goods in the cited registration, "read as a whole, is lengthy and heavily oriented toward specialized AI and communications-processing functionalities, including extensive interaction and healthcare-focused features alongside other technical components," and is distinguishable from Subsup's "non-medical, AI chatbot software and related software offerings under TALKIE versus the registrant’s broad, specialized, and differently framed suite of goods under TALKIE.AI."

Examining Attorney Mitchell Knief maintained that the particular goods identified in the cited registration as "downloadable computer chatbot and bot software for simulating conversation" are broad enough to encompass applicant's more limited software. The Board agreed: "These goods are legally identical, and the second DuPont factor strongly supports a conclusion that confusion is likely." Furthermore, the Board must presume that these identical goods travel in the same channels of trade to the same classes of consumers.

Turning to a comparison of the marks, the Board noted that "[w]hen a mark comprises both words and a design, the words are normally accorded greater weight because they are more likely to be impressed upon a purchaser’s memory and would typically be used by purchasers to request the goods or services." And so, the Board gave greater weight to the literal element than the design element of the mark. Furthermore, the Board observed that since the mark at issue is in standard character form, it could be depicted in the same font style and size as the word TALKIE in the cited mark

The marks are similar in sound because the TALKIE element of each mark will sound identical. The marks are "quite similar" in connotation and commercial impression because TALKIE suggests “‘talking’ or ‘chatting,’ a commonplace concept in software used for conversation, messaging, and chatbot interaction.” The design element reinforces the idea of “talking” or “chatting,” and the .AI suffix in the cited mark "identifies one party to the conversation."

And so, the first DuPont factor "strongly supports" a conclusion that confusion is likely.

As to customer care, there was "nothing in the record to show that the least sophisticated potential purchaser of Applicant’s downloadable software is likely to exercise anything more than ordinary care," and so the fourth DuPont factor was neutral.

Subsup argued that TALKIE is conceptually weak, pointing to the TALKIE-related registrations cited by the Examining Attorney in the final refusal, and asserting that “the shared TALKIE/TALK element should be afforded a narrower scope in the overall Section 2(d) analysis ....” The Board pointed out that the cited registration issued on the Principal Register without a requirement of a showing of acquired distinctiveness, and so "we presume that it is inherently distinctive, i.e., that it is at worst suggestive of the goods." Nonetheless, common use of a term may indicate that the mark or common element has some conceptual weakness.

Applicant has pointed to no TALKIE-formative registrations in the record beyond the three cited registrations owned by the same entity and the fourth cited registration owned by a different entity. Even if we consider the four other cited registrations, reflecting only two additional source entities, to be “third-party registrations” vis-à-vis the mark shown in the ’449 Registration, “two sources are not enough to show dilution of a mark, nor [do] they show that there is a ‘crowded field’ of sources utilizing these similar terms.”

Finding that the first, second, and third DuPont factors supported the refusal and none weighed against it, the Board affirmed.

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TTABlogger comment: There were three third-party owners in the supposed "crowded field" (including the registrant). If applicant had added a word to TALKIE, would that have avoided the refual?

Text Copyright John L. Welch 2026.